Ex Parte Cohen et al

Patent Trial and Appeal Board

Jun 22, 2017

13620037 (P.T.A.B. Jun. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/620,037 09/14/2012 Peter D. Cohen 120137.491C1 6535
500 7590 06/22/2017
SFFD TNTFT T FFTT TAT PROPFRTY T AW GROT TP T T P
EXAMINER
701 FIFTH AVE JEANTY, ROMAIN
SUITE 5400
SEATTLE, WA 98104 ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
06/22/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER D. COHEN, DANIEL A. SANDERSON,
MIKHAIL SEREGINE, BRETT KIEFER,
JANG HAN GOO, and JEFFREY P. BEZOS
Appeal 2016-007503
Application 13/620,0371
Technology Center 3600
Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and
CARL L. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 100—120 and 126—130, which constitute all the
pending claims. Final Act. 3—7. Claims 1—99 and 121—125 are cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Amazon Technologies, Inc.
App. Br. 2.
Appeal 2016-007503
Application 13/620,037
STATEMENT OF THE CASE
The disclosed and claimed invention relates to facilitating task
interactions between requesters who have tasks that are available to be
performed and task performers who are available to perform tasks. Abstract;
1—3. Claim 100, reproduced below, is exemplary of the subject matter on
appeal:
100. A computer-implemented method comprising:
tracking, by one or more configured computing systems of a task
fulfillment system, information related to past performance of tasks
assigned, by the task fulfillment system via one or more first electronic
communications sent from the one or more configured computing
systems over one or more computer networks to multiple client devices
that are each associated with one of a plurality of task performer users
of the task fulfillment system, to multiple of the task performer users;
receiving, by the one or more configured computing systems and
via one or more second electronic communications sent over the one or
more computer networks from a first client device of a task requester
user of the task fulfillment system, information from the task requester
user about a task that is available to be performed and that has an
associated qualification for a task performer user to be eligible to
perform the available task;
analyzing, by the one or more configured computing systems, the
tracked information to determine one or more task performer users of
the plurality of task performer users who have the associated
qualification based on past performance of one or more other tasks by
the one or more task performer users;
providing, by the one or more configured computing systems
based at least in part on the analyzing and via one or more third
electronic communications sent from the one or more configured
computing systems over the one or more computer networks to a
respective client device of each of the determined one or more task
performer users, information about the available task to the determined
one or more task performer users;
controlling, by the one or more configured computing systems,
the performance of the available task by at least one of the determined
one or more task performer users by interacting with the at least one
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task performer user via one or more fourth electronic communications
sent over the one or more computer networks to one or more client
devices associated with the at least one task performer user, the
interacting with the at least one task performer user including receiving
results of the performance of the available task; and
providing, by the one or more configured computing systems via
one or more fifth electronic communications sent over the one or more
computer networks to the first client device of the task requester user,
information from the results of the performance of the available task by
the at least one task performer user.
App. Br. 28—29. (Claims Appx.).
THE REJECTION
Claims 100-120 and 126—130 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 3—7 (“the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.”).
ANALYSIS
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.
Ct. 2347 (2014) reiterated the framework set out in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) for
“distinguishing patents that claim . . . abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355.
The first step in the analysis is to determine if the claim is directed toward a
patent-ineligible concept and, if so, the second step is to determine whether
there are additional elements that transform the nature of the claim into a
patent eligible application. Id. (citing Mayo, 132 S. Ct. at 1297, 1298). The
second step searches for an inventive concept that is sufficient to ensure that
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the patent amounts to significantly more than a patent on the patent-
ineligible concept. Id. (citing Mayo, 132 S. Ct. at 1294).
Appellants argue (1) the claims are patent-eligible under the
streamlined eligibility test; (2) the claims are not directed to an ineligible
abstract idea; and (3) even were they assumed arguendo to be directed to an
abstract idea, the claims, when viewed as a whole, recite an inventive
concept that amounts to significantly more than such an abstract idea. App.
Br. 12-27; Reply Br. 4-13.
We are not persuaded by argument (1) because the failure, if any, of
the Examiner to follow practice and procedure training guidance for
examination is only appealable to the extent the Examiner fails to follow the
patent statutes and precedential case law. Below, we review Appellants’
arguments, as considered under the patent statutes and applicable controlling
case law.
Regarding arguments (2) and (3), the Examiner concludes:
The claim [100] is similar to the functions of organizing human
activities such as creating a contractual relationship as was found
in buySafe.
... the steps or functions of tracking, receiving, providing and
controlling are similar to concepts that have been identified as
abstracts by the courts as found in Classen and Perkin-Elmer
which involved functions of collecting and comparing data to
determine a risk level. The functions of tracking, receiving,
providing, and controlling are similar to concepts that have been
identified by the courts as found in Freddie Mac which involved
computing a price for the sale of a fixed income asset and
generating a financial analysis output.
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The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because:
The additional elements when considered both
individually and as a combination do not amount to significantly
more than the abstract idea. The claim recites the additional
elements of one or more configured computing systems over one
or more computer networks to multiple client devices[.] These
claimed devices are noted to perform routine computer functions
such as receiving data, comparing data, matching data, and
generating data.
The claimed computing system/processor is seen as a
generic computer performing generic functions without an
inventive concept as such do not amount to significantly more.
These devices are simply a field of use that attempt to limit the
abstract idea to a particular environment. The type of data being
manipulated does not impose meaningful limitations. Looking at
the elements as a combination does not add anything more than
the elements analyzed individually. Therefore the claim does not
amount to significantly more than the abstract idea itself. The
claim is not patent eligible.
The dependent claims when analyzed and each taken as a
whole are held to be patent ineligible under 35 U.S.C. [§] 101
because the additional recited limitations fails to establish that
the claims are not directed to an abstract idea.
Ans. 8—10.
Appellants contend the Examiner fails to establish a prima facie case
and instead relies on unsupported opinion. App. Br. 13—15. According to
Appellants, “the Office bears the initial burden of factually supporting any
prima facie conclusion” and “[i]f the Office does not set forth sufficient
factual evidence to discharge the requirement to set forth a prima facie case,
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the applicant is under no obligation to submit evidence to traverse the
unsubstantiated allegation.” Id. at 15.
We are not persuaded by this argument because it is not relevant to
whether the Examiner has given Appellants a reasonable notice as to the
basis of the § 101 rejection. The notice requirement is set forth by
35U.S.C. § 132.
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35
U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed.Cir.1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Appellants further argue “the claims are not directed to an algorithm,
a mathematical formula, or a fundamental economic practice-which are the
only three exceptions to subject matter eligibility that the Supreme Court has
positively identified” and “[ijndeed, the claims here are unlike any of the
claims in the cases cited by the Office in support of its rejection.” App. Br.
15-16.
Appellants also argue the particular elements of the claims
demonstrate the claims are not directed to a mere abstract idea. Id. at 17.
For example, Appellants refer to claim 100 “tracking” limitation and
highlight, inter alia, additional limitations “configured computing systems
of a task fulfilment system, information related to past performance of tasks
assigned. ... to multiple devices . . . .” Id.
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Appellants argue the dependent claims include additional elements
that establish such claims are not directed to an abstract idea and, as in the
rejection of the independent claims, discussed supra, the Examiner presents
no evidentiary support for the conclusory statement regarding that the claims
are directed to an abstract idea. App. Br. 20-22 (citing dependent claims
108 and 130).
Appellants further argue the claims recite an inventive concept that
amounts to significantly more than an abstract idea and the Examiner has not
performed the proper inquiry as to the claim as a whole nor provided
evidence or documentation. App. Br. 22—26. According to Appellants, the
claims are not subject to any art-based rejection which indicates the
recitations of the claim elements cannot be generic, well understood while
also being novel and non-obvious. Id. at 24.
Appellants argue each of the independent claims solve a technological
problem “to coordinate multiple electronic network communications in order
to determine eligible task performer users for tasks based on specified
qualifications, and to utilize such network communications to control
performance of those tasks.” Id. 24 (citing Diamond v. Diehr, 450 U.S. 175,
188 (1981). According to Appellants:
Furthermore, each of the pending independent claims 100, 113
and 126 improves another technology or technical field (e.g., task
exchange and fulfillment), improves the functioning of a
particular device (e.g., a task exchange server), and adds
meaningful limitations beyond generally linking the purported
abstract idea of "providing information about [an] available task
to the determined one or more task performer users" to a
particular technological environment.
Id. at 24—25.
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Appellants argue that the claims that are “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks” such as the Internet do not recite an
abstract idea as they address problems specific to such a networked
environment. Id. at 25 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014). According to Appellants, the rejected claims are
much like those found patentable in DDR. Id.
Appellants further argue, in contrast to the claims in Alice, the
rejected claims do not preempt use of all solutions involving the concept of
“providing information about [an] available task to the determined one
or more task performer users, as evidenced by the prior art references
previously cited by the Office itself.” Id. at 26.
In the Reply Brief, Appellants argue the pending claims are directed
to improving automated operations of a computer-implemented system, in a
manner analogous to recent cases. Reply Br. 4—6 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016).
Appellants argue the Examiner errs in concluding the claims are
merely directed to “facilitating interactions between task requesters who
have tasks that are available to be performed and task performers who are
available to perform tasks” and “organizing human activities such as
creating a contractual relationship.” Id. at 4—5. Instead, Appellants argue
the claims are directed to:
[Ajutomated operations for a computer-implemented task
fulfillment system to control how available tasks are completed
in a manner that improves the efficiency of the task fulfillment
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system and its task performance, including by tracking and
analyzing information about prior task performance to
determine task performer users that are qualified to perform
current tasks.
Id. at 5—6. According to Appellants, the claims are analogous to claims
found to be patent eligible in Enfish. Id. at 6.
In the Reply Brief, Appellants also argue the rejected claims are
related to substantially more than merely “organizing human activities” or
“facilitating interactions between users,” in a manner analogous
to the Bascom Case. Reply 8—11 (citing Spec. Tflf 2—8, 24, 26, 31, 41—42,
141—142, 152). According to Appellants:
Thus, in a manner analogous to Bascom, the combination of
elements implementing such automated operations enable the
computer-implemented centralized online task fulfillment
system to perform its automated operations more efficiently and
accurately, by controlling performance of tasks to be performed
by users whose historical performance of other tasks
demonstrates a sufficient proficiency to be qualified to perform
a current task. As such, the actual recited claim language of the
claims goes far beyond merely 'organizing human activities to
create a contractual relationship' or 'facilitating interactions'
between users as is alleged.
Id. at 17.
Appellants challenge the Examiner’s articulation of what the claims
are directed to, but the challenge is unfounded. See App. Br. 4—13; Reply
Br. 4—13. For example, the fact that the claims are drafted to include a
computing environment is not dispositive. The question is not whether
claims mention a computing environment but what they are “directed to.”
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[T]he “directed to” inquiry applies a stage-one filter to claims, considered in
light of the specification, based on whether “their character as a whole is
directed to excluded subject matter.” Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd.
v. MerialL.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016) (inquiring into “the
focus of the claimed advance over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). “In
determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
Taking claim 100 as representative, the claim sets forth six steps: (1)
tracking past performance of tasks by task performers; (2) receiving from a
task requester information about a task to be performed and an associated
qualification for a task performer; (3) analyzing the tracked information to
determine task performers with the associated qualification; (4) providing
the tracked information to the determined task performers information about
the task; (5) controlling the performance of the task by the task performer
and receiving results of the performance of the task; and (6) providing to the
task requestor, information from the results of the performance by the task
performer.
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Although the claim may additionally recite computer related elements
(e.g., “computing systems, task fulfillment system, electronic
communications, computer networks, client devices, . . .), we agree with the
Examiner that the claim is directed to “facilitating interactions between task
requesters who have tasks that are available to be performed and task
performers who are available to perform tasks” and “organizing human
activities such as creating a contractual relationship.”
The Specification supports this view. Spec. Abstract, || 2, 24. Also,
the Specification presents insufficient support that the computer related
elements are anything other than conventional and generic. See also Ans.
11—14. We note further that Appellant’s interpretation regarding abstract
ideas is directed to “automated . . .” and refers to no automation element in
the claims. Id. at 6. Regarding Appellants’ argument that the lack of an art-
based rejection indicates the claim elements cannot be generic is speculation
and contrary to the record before us.
Moreover, we conclude each of Appellants’ claims on appeal is
distinguishable from the type of claim considered by the court in Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and Bascom. We
conclude none of Appellants’ claims is “directed to an improvement in the
functioning of a computer,” as was found by the court regarding the subject
claim in Enfish, 822 F.3d at 1338. To the extent that the recited steps or acts
may be performed faster or more efficiently using a computer, our reviewing
court provides applicable guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself See Bancorp
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Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.”).
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed.
Cir. 2016) (emphasis added). See also Electric Power Grp., 830 F.3d at
1350, to the extent that Appellants’ claims similarly collect information,
analyze it in some fashion, and present or communicate the result. The
Court in Electric Power guides: “we have treated analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” 830 F.3d at 1354 (internal citations omitted).
Applying this reasoning to Appellants’ claims on appeal, we similarly
find any purported faster or more efficient performance of the claimed steps
or acts merely comes from the capabilities of a general-purpose computer
and/or computer related elements, rather than from Appellants’ claimed
steps or functions.
Moreover, regarding Appellants’ argument that the subject matter of
the claims is similar to claims found patentable that are “necessarily rooted
in computer technology,” Appellants’ reliance on DDR (App. Br. 25) and
other cited cases is misplaced. For example, in DDR, the claims at issue
involved, inter alia, “web pages displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants” (claim 1 of US 7,818,399). There
is no such web page with an active link in the claims here before us. The
Specification supports the view that the computer related elements of claims
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100, 113, and 126 are generic and do not constitute an inventive concept.
See discussion, supra.
We appreciate that the claims provide for a specific approach to
“facilitating interactions between task requesters who have tasks that are
available to be performed and task performers who are available to perform
tasks” and “organizing human activities such as creating a contractual
relationship.” But the specifics rest not so much in any underlying computer
technology but in practicing the resulting particular scheme itself. Cf. Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016). “Generally, a claim
that merely describes an ‘effect or result dissociated from any method by
which [it] is accomplished’ is not directed to patent-eligible subject matter.”
Id. at 1244 (alteration in original) (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)).
The patents claim systems including menus with particular
features. They do not claim a particular way of programming or
designing the software to create menus that have these features,
but instead merely claim the resulting systems. [McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016) (“directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery”).]
Essentially, the claims are directed to certain functionality—
here, the ability to generate menus with certain features.
Alternatively, the claims are not directed to a specific
improvement in the way computers operate. Cf. Enfish, 822 F.3d
at 1335—36.
Id. at 1241.
Applying the first step of Alice, we are not persuaded by Appellants’
arguments that claims 100, 113, and 126 are not directed to abstract ideas
and therefore agree, with the Examiner’s legal conclusion that these claims
are directed to non-statutory subject matter. Accordingly, we conclude the
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claims are directed to a patent-ineligible concept. Step 2 of the analysis
considers whether the claims contain an inventive concept such as additional
limitations that narrow, confine or otherwise tie down the claim so that it
does not fully cover the abstract idea itself. See Alice, 134 S. Ct. at 2357.
Here, we agree with the Examiner that no inventive concept is present. In
particular, the hardware and computer-related features are the type of
generic element that has been determined to be insufficient by the Supreme
Court to transform a patent-ineligible claim into one that is patent-eligible.
See id. The claims include no limitations that prevent it from covering the
abstract idea itself.
We also agree, for the same reasons, discussed supra, with the
Examiner’s conclusions regarding dependent claims 108 and 130. Final Act.
10.
In view of the above, we sustain the rejection of claim 100,
independent claims 113 and 126, which recite similar limitations as claim
100 and are argued together with claim 100, and the rejection of dependent
claims 108 and 130. We also sustain the rejection of dependent claims 101—
107, 109-112, 114—120, and 127—129 as these claims are not argued
separately.
DECISION
We affirm the Examiner’s decision rejecting claims 100—120 and
126-130 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(IV).
AFFIRMED
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